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In the latest litigation saga, the heirs of the late Bob Marley have lost their claim that they were entitled to the authorship in and the renewal rights to copyright of various sound recordings made under three agreements entered into by Bob Marley and Island Records in the 1970s.

Legal context

The issue for determination by the District Court of New York was whether the plaintiff company, owned by the heirs of Bob Marley, was entitled to prevent the renewals by the defendant of certain sound recordings on the basis that they were not owned by the defendant, based on various exclusive recording contracts entered into between Bob Marley and Island Records Inc., the predecessor-in-title to the defendant, but by the heirs of Bob Marley on the basis that authorship of the copyright reverted to them when he died in 1981.

Facts and analysis

In 1972, 1974 and 1975, Bob Marley entered into three exclusive recording agreements with Island, on substantially the same terms: Bob Marley was to perform services exclusively for Island and to produce albums under the agreements. Advances made by Island to Bob Marley would be offset against royalties to be paid to him under all three agreements; so too would be the cost of Bob Marley's use of Island's studios to record his performances. Island had the power to compel Bob Marley's attendance at various locations for the purpose of recording his performances. Although both parties were to agree to the lyrics and music to be recorded, this was subject to the overriding ability of Island to decide at its discretion whether such music was acceptable to it for commercial production and to reject it if it was not. The agreements provided that the sound recordings were to be the ‘absolute property’ of Island, which had the exclusive and perpetual right to exploit the recordings by any means whatsoever throughout the world, excluding the Caribbean. Under the 1974 agreement Island had the right to refuse to accept an album if it determined that such an album did not have sufficient commercial potential. The 1975 agreement contained similar provisions but provided that Media Aides, Bob Marley's company, had the right to determine the times and places for recordings. Two albums, ‘Catch a Fire’ and ‘Burnin’, were released under the 1972 Agreement; only ‘Natty Dread’ was released under the 1974 Agreement; ‘Rastaman Vibrations’ and ‘Exodus’ were released under the 1975 Agreement. These five albums contain some of Bob Marley's best-known songs, including ‘Get Up, Stand Up’, ‘I Shot the Sheriff,’ ‘Three Little Birds,’ ‘No Woman, No Cry’ and ‘One Love’. Subsequent agreements were made with the predecessors of Media Aides in relation to the creation of additional albums and the payment of royalties.

The plaintiffs, Rita Marley, Bob Marley's widow and his nine children, through their wholly-owned company, Fifty-Six Hope Road, brought an action against Universal Music Group Recordings Inc (UMG), the successor-in-interest to Island, to prevent the renewals of copyright registrations in relation to the sound recordings created by Bob Marley and released by Island pursuant to the 1972, 1974 and 1975 Recording Agreements (the Marley Recording Agreements). UMG is a unit of Vivendi SA's Universal Music Group. The plaintiffs claimed that the defendant failed to pay Fifty-Six Hope Road all of the royalties due to them under the Marley Recording Agreements and that the renewal of the copyrights of each of the five sound recordings made pursuant to the Marley Recording Agreements (Sound Recordings) reverted to them under the Copyright Act 1909 upon the death of Bob Marley in 1981 and that they owned them. They also claimed that UMG ignored a 1995 agreement to share royalties with Fifty-Six Hope Road Music Ltd (the Royalties Agreement), and in addition failed to consult them on key licensing decisions such as use of Bob Marley's songs in the ringtone market, namely, on AT&T, Sprint and T-Mobile phones.

The arguments

The plaintiffs argued that because Bob Marley died in 1981, before the copyrights in the Sound Recordings entered the renewal terms, ownership of the renewal term copyrights reverted to them under the then Copyright Act 1909 and, that since they had not conveyed the copyrights to UMG or anyone else, they were the rightful owners of the renewal term copyrights. UMG argued that, through its predecessor-in-interest Island, UMG had at all times been the statutory ‘author’ of the Sound Recordings. UMG argued that the clauses of each of the Marley Recording Agreements demonstrated that the Sound Recordings were ‘works made for hire’ under the 1909 Act and that consequently it owned the copyrights in the initial and renewal terms of the Sound Recordings, regardless of when Bob Marley died.

The decision

District Court Judge Denise Cote began by examining the distinction between the meaning of the term ‘author’ in its common dictionary sense and its meaning as a legal conclusion in copyright law. She claimed that UMG did not deny that Bob Marley was the author of the Sound Recordings in the common dictionary sense, ie in the sense that he was their creator or the source of the Sound Recordings. It disputed that Bob Marley was the author of the Sound Recordings in the legal sense, ie in the sense that Bob Marley was the person in whom the statutory copyright in the Sound Recordings initially vested and to whose heirs the renewal term of the copyright reverted when he died before commencement of that term. UMG claimed that, although Bob Marley was the author of the recordings in the common dictionary sense of the words, the Sound Recordings were ‘works for hire’ and that it was therefore entitled to the financial rewards copyright law traditionally granted to encourage such efforts.

Under section 17 of the 1909 Act, ‘author’ included ‘an employer in the case of works made for hire’, which meant that with respect to works for hire, the employer was legally regarded as the ‘author,’ as distinguished from the creator of the work: Martha Graham, 380 F.3d at 634. The Federal Court of Appeal in Martha Graham accepted that section 17 of the 1909 Act meant that ‘[i]f a work is a work for hire under the 1909 Act, the employer as statutory “author” owns the original term, and the renewal term vests in the employer if the employer makes an application for renewal within the last year of the original term.’ It also pointed out that in determining whether a work was a ‘work made for hire’ under the 1909 Act, the Federal Court applied the ‘instance and expense’ test, stating that the copyright belongs to the person at whose ‘instance and expense’ the work was created. Indeed, the jurisprudence of the Federal Court concerning the status of commissioned works under the 1909 Act created an almost irrebuttable presumption that any person who paid another to create a copyright work was the statutory ‘author’ under the ‘work for hire’ doctrine. Also, once it is established that a work was made for hire, the hiring party was presumed to be the author of the work. That presumption can be overcome, however, by evidence of a contrary agreement, either written or oral. The burden of proof is on the other party to demonstrate by a preponderance of the evidence that such a contrary agreement was reached.

On the facts the judge held that the Sound Recordings were ‘works made for hire’ under the 1909 Act, because the Bob Marley Agreements, inter alia (a) clearly demonstrated that the Sound Recordings were created at the instance of Island and that Island had the right to direct and supervise the manner in which Bob Marley created the Sound Recordings; (b) obligated Bob Marley to produce ‘sufficient acceptable recordings’ to comprise a specific number of albums for Island within the term of each agreement and (c) provided that Island would pay Bob Marley certain advances against royalties for the creation of the Sound Recordings. Having concluded that the Sound Recordings were works for hire, the judge held that Island and its successor-in-interest UMG were presumed to be the statutory author under the 1909 Act: while this presumption can be overcome by evidence of an agreement to the contrary, the plaintiffs presented no evidence of such an agreement and that other clauses in the Bob Marley Agreements reinforced the presumption that UMG was the statutory author of the Sound Recordings, because each of the agreements provided that the Sound Recordings were the ‘absolute property’ of Island, which was entitled to the ‘sole and exclusive right in perpetuity’ to exploit the Sound Recordings by ‘any and every means whatsoever.’ The court stated that its conclusion that the Sound Recordings were ‘works made for hire’ was also consistent with the original copyright registrations and renewal registrations, which listed Island, not Bob Marley, as the ‘author’ of the Sound Recordings.

After considering and rejecting each of the arguments advanced on behalf of the plaintiffs as to why the Sound Recordings were not ‘works for hire’ under the 1909 Act, the judge stated that the terms of the Marley Recording Agreements demonstrated clearly that the Sound Recordings were produced at the instance and expense of Island and were therefore ‘works made for hire’ under the 1909 Act: it was irrelevant that Bob Marley might have maintained artistic control over the recording process. What mattered was that Island had a contractual ‘right’ to accept or reject what he produced. The plaintiffs had failed to introduce any evidence of an agreement to rebut the presumption that Island owned the copyrights in the Sound Recordings from the outset. In particular, whether Bob Marley would have recorded his music even if he had not entered the recording agreements with Island was beside the point: UMG, as Island's successor-in-interest, was the statutory author and owner of the initial and renewal term copyrights in the Sound Recordings. The judge also denied the plaintiff's request for a ruling upholding its claims over digital downloads, pointing to ambiguity in the Royalties Agreement. She directed the plaintiffs and UMG directed to enter into court-supervised settlement talks, the conference for which was scheduled for October 29.

Practical significance

The 1909 Act, repealed and replaced by the Copyright Act 1976, continues to apply in relation to works created before 1 January 1976, the date the 1976 Act came into effect. Under the 1909 Act, the term of copyright was for an initial period of 28 years, which could be renewed for another 28 years. The renewal could only be properly done if it was registered by the author in the last year of the first initial period, failing which the author would lose copyright. The 1976 Act extended the renewal term of works created before 1 January 1976 to 47 years, which was subsequently increased to 67 years by the Copyright Term Extension Act 1998. The author was the person entitled to the renewal of copyright for 67 years, subject to one major exception for ‘works made for hire’. In relation to such works, the right to renew after the first term of 28 years was not vested in the person who created the work, but to the person who was the proprietor at the end of the first term, or who had obtained copyright from them. The 1976 Act ‘work for hire’ falls into two categories, namely: (a) works prepared by an employee within the scope of his or her employment; or (b) works which fits into one of nine categories stipulated in the Act and is in writing signed by the parties acknowledging that the work is a ‘work for hire’.

This decision does not mark a shift of emphasis in the principles to be applied in determining when a work is a ‘work for hire’. It does, however, highlight the potentially harsh effects that may result if the work is so defined to allow the proprietor an additional 67 years of copyright protection to the exclusion of the heirs of the creator of the work.

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